Legal Updates – Passing Off & Image Rights

Intellectual Property – Image Rights – Copyright – Passing Off - Robyn Rihanna Fenty and others v Arcadia Group Brands Limited

In the recent case of Rihanna Fenty (“Rihanna”) and others v Arcadia Group Brands Limited (t/a Topshop) and Top Shop/Top Man Limited (“Topshop”), judge Mr Justice Birss found that the sale by Topshop of t-shirts bearing the image of Rihanna without her approval was an act of passing off.

Background

• In 2012, Topshop started selling t-shirts bearing an image of Rihanna;
• The image was a photograph, which had been taken by an independent photographer during the filming of a music video in 2011;
• The t-shirts in question were supplied to Topshop by a major clothing design and manufacturing company called Knitmania UK Limited (“Knitmania”);
• Knitmania had obtained a licence to use the image from the photographer but not from Rihanna herself;
• Rihanna contended that the sale of the t-shirts with her image on them was done without her permission, and therefore infringed her rights.

Issues

This case concerned passing off. The three elements of passing off, as stated in the Jif Lemon case, are well known and are briefly set out below:

• Goodwill – Rihanna had to show that she has goodwill and reputation amongst relevant members of the public;
• Misrepresentation – The conduct complained of must have been a misrepresentation i.e. to be likely to deceive members of the public into buying the product because they believed it was authorised by her; and
• Damage – The misrepresentation must have caused damage to Rihanna’s goodwill.

Outcome

The judge considered each element of passing off to establish if a case for passing off was made out:

• Goodwill - The judge found that Rihanna had ample goodwill in 2012 and that she was in fact “regarded as a style icon by many people”. The scope of Rihanna’s goodwill was not simply as a music artist, but also in the realm of fashion.
• Misrepresentation - The judge found that there was misrepresentation, based on the points below:
  • Despite the fact that in the majority of cases for sale the word RIHANNA did not appear, the nature of the image gave a “fairly strong” indication that the t-shirts were authorised products, that is, approved by Rihanna;
  • The public links between Topshop and famous stars, including Rihanna, enhances the likelihood in the purchasers’ minds that the t-shirts were authorised;
  • Even though there was no indication of authorisation by Rihanna on the swing tags or neck labels, this was not strong enough to negate the impression that the t-shirts were authorised;
  • The judge accepted that a number of purchasers would not have questioned whether the t-shirts were authorised, however, a “substantial portion of those considering the product will be induced to think it is a garment authorised by the artist”.
• Damage – The judge found that damage was caused to Rihanna’s goodwill because a substantial number of purchasers (and probably fans of Rihanna) were likely to be deceived into buying the t-shirts because they believed that the t-shirts were authorised by Rihanna.
  • This amounts to sales lost to Rihanna’s merchandising business as well as a loss of control over her reputation within fashion.

The judge held that in these circumstances, the sale by Topshop of t-shirts bearing the image of Rihanna without her approval was an act of passing off.

Note:

This case reaffirmed the fact that there is no such thing as “image rights” under the laws of England and Wales. The judge made it clear at the outset that, although this case did not concern “image rights”, such rights do not exist in England.

Whatever may be the position elsewhere in the world, and however much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image (Douglas v Hello [2007] UKHL 21)

For any legal advice on copyright, passing off or IP law issues, you may contact us by email [email protected]. Visit http://www.rtcoopers.com/practice_intellectualproperty.php or www.rtcoopersiplaw.com or consider our article on How to Defend Allegations of Passing Off.

© RT COOPERS, 2013. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.